Notation to File

PASTPORT

HistoryIT, Inc.

Notation to File

NOTE TO THE FILE


SERIAL NUMBER:            88240747

DATE:                                12/06/2019

NAME:                               mdubois

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

Dear Examiner Dubois,

 

Thank you for your email and for speaking with me just now.

 

As we discussed, my client is agreeable to adding a field of use restriction to the recitation of services in order to clarify that the mark will not conflict with the registrations cited in the March 25 office action and the additional registrations we discussed today.

 

In reviewing each of these registrations, the MY PASSPORT registration is for computer hardware goods, which are quite distinct from the archiving software recited in the application.

 

The remaining marks, PASSPORT DOCUMENT CLOUD, ONE MEDICAL PASSPORT, and PASSPORT ARCHIVE each identify software services that specifically relate to medical records and patient information. 

 

Therefore, we propose the following description, which we believe eliminates any potential for confusion between the applied-for mark and the cited registrations:

 

Computer application software for mobile phones, namely, downloadable software for capturing and archiving tangible items, documents and artwork in digital format excluding use in the field of healthcare and patient medical records; Downloadable software in the nature of a mobile application for capturing and archiving tangible items, documents and artwork in digital format excluding use in the field of healthcare and patient medical records; Downloadable mobile applications for capturing and archiving tangible items, documents and artwork in digital format excluding use in the field of healthcare and patient medical records; Portable archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Downloadable mobile applications for processing digital images of tangible items, documents and artwork into a digital archival preservation format excluding use in the field of healthcare and patient medical records

 

 

If this description is acceptable, you have my authorization to enter the changes via an examiner’s amendment.

 

If you have any questions or wish to discuss the description further, please do not hesitate to contact me.

 

 

Best regards,

 

Sean Sweeney

Tredecim LLC

(207) 221-6100

mailto:sean@tredecimlaw.com


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